WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Michel Galarneau
Case No. D2001-1448
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG having an address at Porscheplatz 1, 70435, Stuttgart, Germany.
The Respondent is Michel Galarneau, having an address at160 ouellette #2, Saint-Jerome, Quebec, J7Y 4X1, Canada.
2. The Domain Name and Registrar
The domain name in dispute is <porschedesign.com>.
The Registrar with which said domain name is registered is Verisign Inc. (Network Solutions, Inc.) (hereinafter "the Registrar").
3. Procedural History
On December 11, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on December 17, 2001.
On December 18, 2001, the Center sent a Request for Registrar Verification to the Registrar and on December 19, 2001, the Registrar responded, confirming that it is the registrar of the said domain names, that the Respondent is the current registrant of the said domain name, that the Respondent is the Administrative contact, Billing contact and Technical contact for said registration, that the Policy applies to the said registration and that the said registration had an active status at that time.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant. It was noted that the hardcopy of the Complainant had not been signed as required by paragraph 3(b)(xiv) of the Rules. Following a request by the Center this was corrected by the Complainant.
On January 7, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. Said Notification was sent to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail (without enclosures).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceeding had commenced on January 7, 2002, and that the Respondent was required to submit a Response to the Center on or before January 27, 2002.
No Response was received by the Center from the Respondent and on January 28, 2002, the Center sent a Notification of Respondent Default to the Respondent by post/courier and by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorised representative of the Complainant by e-mail. Said Notification inter alia advised the Respondent that the Respondent was in default and that in accordance with the Rules, and the Supplemental Rules, the Center would proceed to appoint a single member Administrative Panel as designated by the Complainant, that the said Administrative Panel would be informed of the said default, and that the Center would continue to send all case-related communications to the Respondent.
On February 18, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint said James Bridgeman as Administrative Panel. On the same day the case file was transmitted to the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is a maker of high-performance sports cars and has carried on that business for more than fifty years. Over that period, the Complainant has used the word "PORSCHE" as the prominent and distinctive element in its trade name.
The Complainant is the owner of numerous trademark registrations throughout the world including the following registered trademarks in Canada:
- "Porsche" and shield: TMA117101, filed 2d Dec. 1958, reg. 4th Mar. 1960 (Automobiles and parts thereof)
- "Porsche" and shield: TMA403242, filed 4th Dec. 1990, reg. 2d Oct. 1992 (Toy cars and toy car kits)
- "Porsche" and shield: TMA414155, filed 5th Dec. 1990, reg. 2d Jul. 1993 (motorcar related services).
- "Porsche": TMA117102, filed 2d Dec. 1958, reg. 4th Mar. 1960 (Automobiles and parts thereof).
- "Porsche": TMA419099, filed 5th Dec. 1990, reg. 5th Nov. 1993 (motorcar related services).
- "Porsche": TMA397848, filed 4th Dec. 1990, reg. 1st May 1992 (toy cars and toy car kits).
- "Porsche": TMA346447, filed 2d Oct. 1987, reg. 14th Oct. 1988 (clothing).
- "Porsche Carrera" Design: TMA212795, filed 11th Sept. 1973; reg. 19th Mar. 1976 (Automotive vehicles and parts thereof).
- "Porsche Design": TMA341382, filed 12th Sept. 1980; reg. 10th June 1988 (various consumer products).
- "Porsche Design": TMA387368, filed 23th Jul. 1981, reg. 9th Aug. 1991 (Perfumes).
The Complainant operates several www sites. Its main www sites can be found at the following addresses: <porsche.de> and <porsche.com>.
The Complainant has licenced another company, Porsche Design Managament GmbH & Co. KG, Salzburg to sell consumer products such as watches, eyeware and writing instruments using said PORCHE DESIGN trademark and the licencee maintains a www site at <www.porsche-design.com>.
The Respondent has an address in Canada and except for the basic information relating to the registration of said domain name supplied by the Registrar, the only information available to this Administrative Panel about the Respondent has been supplied by the Complainant.
The Respondent has established a www site accessible via the domain name in dispute in these Administrative Proceedings.
5. Partiesí Contentions
The Complainant points to the fact that it is the owner of the numerous trademarks, described supra, consisting of or incorporating the word PORSCHE and its trademarks and the trade name PORSCHE are known all over the world and enjoy considerable reputation.
According to the Complaint, the Respondent is engaged in Internet related services like server hosting, webdesign, and software programming. The Complainant has furnished details of third party commercial enterprises with which the Complainant believes the Respondent is associated or has been associated in the recent past. None of these bear any name that is in any way similar to the Complainantís trademarks or said domain name.
The Complainant submits that the Respondent has created and is maintaining a www site to which the contested domain name resolves. The Complainant has furnished this Administrative Panel with screenshots of the content of this www site. The Complainant asks this Administrative Panel to note that the www site is presented under the page title "PORSCHE DESIGN". The user is introduced by means of an animated movie showing original photographical images of PORSCHE cars under changing perspectives with the words "Carrera" and "GT" appearing, blending and disappearing. The Complainant submits that these images of motor cars have been taken from the Complainantīs own advertising materials. The Complainant states that golden characters in the graphic content, build up one by one to form the words "PORSCHE DESIGN" in the title.
The Complainant sets out further details of how the Respondent uses the words "PORSCHE DESIGN" in combination, throughout the content of the www site. The Complainant submits that said www site contains subdirectories in which the visitor is directed to images of used PORSCHE cars, spare parts, and accessories. These goods are offered for sale and the visitor is invited to place orders for these goods directly through an online form.
The Complainant asks this Administrative Panel to note that one of these sub-directories, entitled "Company Profile" is empty so the visitor is given no information about the operator of the www site.
The Complainant submits that by "the whole professional and classy makeup" of the www site, the visitor is made believe that he is visiting the Complainantís www site. There is neither a disclaimer nor a statement or even the slightest indication by which the owner of this www site disassociates himself from the Complainant or even acknowledges the Complainantís trademark rights.
The Complainant submits that whereas the contested domain name is owned by the Respondent, he operates the www site under a business name "Automobiles Gilles Arseneau". The Complainant submits that the address of this business in Laval, Quebec appears on the www site along with a telephone number but that this information is in barely legible characters appearing on the right hand side of the screen and underneath the conspicuous "PORSCHE DESIGN" heading.
The Complainant has tried hard to find out who Gilles Arseneau might be, but has failed to identify any business of that name or any personal phone registration for that name. M. Arseneau is neither listed in the <www.google.com> search engine nor in any available listing of Laval (Quebec) businesses. The telephone number given on the www site belongs to a person who is apparently unrelated to this www site or the Respondent. The fax number indicated in the www site is registered for a restaurant having an address in the same neighbourhood as the contact address given by the Respondent.
The Complainant submits that this indicates that the Respondent is operating said www site to which the said domain name resolves; that he is operating this www site for himself; and the Respondent is responsible for the design and content of the www site.
The Complainant states that the Respondent has never been an official dealer of the Complainantís cars. At no time has the Respondent been authorized or licensed by the Complainant to utilize the Complainantís trade name or trademark. There is no business relationship between Complainant and the Respondent. The Complainant states that "[t]he same applies for a person named Gilles Alarneau (sic)". Presumably this statement refers to a person named Gilles Arseneau and this Administrative Panel has taken the statement to refer to a Gilles Arseneau.
On September 4, 2001, the Complainant sent two e-mails to the Respondent demanding that the Respondent refrain from using said domain name <porschedesign.com> and insisting that the Respondent transfer the domain-name to the Complainant. The e-mails were sent to two addresses used by the Respondent. Neither of these e-mails were returned as undeliverable. The Respondent did not reply to these communications.
The Complainant submits that said domain-name <porschedesign.com> is similar to the Complainantīs trade name and trademark PORCHE, and - save for the space bar between the two words Ė it is identical to the trademark PORSCHE DESIGN.
The Complainant submits that its trade name and trademarks are well known throughout the world and embodied entirely in the contested domain name where it forms the distinctive part. In this regard, the Complainant refers to the decision of the administrative panels in Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown (WIPO Case No. D2001-0919, September 15, 2001) relating to the domain name <porscheimporter.com> and Dr. Ing. h.c. F. Porsche AG v. MACROS-TELECOM corp. (WIPO Case No. D2001-0993 October 16, 2001) relating to the domain name <porsche-usa.com>.
The Complainant submits that the presence of the element ".com" in the extension indicates the gTLD and is an irrelevant difference. In this regard the Complainant refers to the decision of the administrative panels in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003, February 18, 2000) relating to the domain name <telstra.org>, and said Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown (WIPO Case No. D2001-0919, September 15, 2001) relating to the domain name <porscheimporter.com>
Similarly the Complainant submits that the absence of a space between the words <porsche> and <design> in the domain name, in contrast to the separation of the two words in the PORSCHE DESIGN trademark is also irrelevant. In this regard the Complainant refers to the decision of the administrative panel in Bayerische Motoren Werke AG (BMW) v. MC Company (WIPO Case No. D2000-1694, February 19, 2001) relating to the domain name <theultimatedrivingmachine.com>, and Rolls-Royce PLC v. Hallofpain (WIPO Case No. D2000-1709, February 19, 2001) relating to the domain name <rollsroycecanada.com>.
The Complainant submits that the word "DESIGN", describes the appearance and visible features of PORCHE cars and PORCHE DESIGN products, and is therefore descriptive and not distinctive. In this regard the Complainant refers to the decision of the administrative panel in Louis Vuitton Malletier v. Somsak Sooksripanich (WIPO Case Nį D2000-0866, November 3, 2000) relating to the domain name <vuittondesign.com> and numerous other domain names. The Complainant submits that there is nothing in the disputed domain name <porschedesign.com> that would signal to the public that the Respondent is distinguished from the Complainant, such as by use of the terms "Second Hand" or "Used". In this regard, the Complainant refers to the decision of the administrative panel in said WIPO Case No. D2001-0919 relating to the domain name <porscheimporter.com>.
The Complainant refers to the trademark laws of Canada relating to the standards for likelihood of confusion and quotes Art. 6 of Canadian Trademark Act in extenso in the Complaint.
The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain-name.
The Complainant submits that the Respondent has neither used nor made preparations to use the domain in connection with a bona fide offering of goods or services. The Complainant here refers to paragraph 4 (c)(i) of the Policy.
The Complainant submits that the onus shifts to the Respondent to bring evidence that he has rights or a legitimate interest in the domain name because the Complainantís trade name and trademark are so well known and have been in use such a long period of time. The Respondent relies for this proposition on the decision of the administrative panel in said WIPO Case No. D2001-0993 relating to the domain name <porsche-usa.com>.
The Complainant submits that there has never been a business relationship between the Parties and the Respondent is not an official dealer of the Complainantís goods. He therefore lacks a legitimate interest in using the contested domain name. The Complainant refers to Dr. Ing. h.c. F. Porsche AG v. SETEC Sembinelli & Partner (WIPO Case No. D2001-0550, July 20, 2001) relating to the domain name <porsche-cup.com> in support of this submission.
The Complainant submits that no trader in new or used cars or parts thereof would reasonably choose the contested domain name for his business. Even if the word "porsche" would indicate the source of goods to be offered there is no reason for the element "design", in particular since the products widely known and sold under the PORSCHE DESIGN trademark are goods such as watches and other accessories.
The Complainant submits that the Respondentís use of the contested domain-name serves to mislead users seeking information from the Complainant or its licensee about the Complainant and its products or PORSCHE DESIGN products.
The Complainant is aware of earlier decisions of administrative panels where a complainant has failed in its application, in circumstances where a respondent had used the domain-name to promote the sale of original products. The Complainant refers to a number of decisions in this regard including Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More (WIPO Case No. D2000-0006, February 28, 2000) relating to the domain name <militec.com>; Draw-Tite, Inc. v. Plattsburgh Spring Inc. (WIPO Case No. D2000-0017, March 14, 2000) relating to the domain name <drawtite.com>; America Online, Inc. v. Frank Albanese (WIPO Case No. D2000-1604, January 25, 2001) relating to the domain name <aoltrader.com>; Koninklijke Philips Electronics N.V. v. Cun Siang Wang, (WIPO Case No. D2000-1778, March 15, 2001) relating to the domain name <philips-indonesia.com>; and DaimlerChrysler A.G. v. Donald Drummonds (WIPO Case No. D2001-0160, June 18, 2001) relating to the domain name <mercedesshop.com>.
The Complainant submits that these decisions can be distinguished as follows:-
In the present case can be distinguished as the Respondent herein is offering a small number of used Porsche-cars and used parts on the www site.
The www sites that were the subject of these earlier decisions were operated to promote the sale of new products as distinct from used products.
The domain-names in dispute in those decisions were reasonably suitable for the offering of such goods, whereas the domain name in the present Administrative Proceedings containing the word element "design" is not so suitable.
In some of these cases the respondent had a business relationship with the various complainants or could claim approval or invoke the principle of acquiescence. This is not the situation in the present Administrative Proceedings and in any event the Complainant submits that even an authorized distributor has been held to lose his legitimate interest when the distributorship ends as in Miele, Inc. v. Absolute Air Cleaners and Purifiers (WIPO Case No. D2000-0756, September 11, 2000) to the domain name <miele.com>.
The Complainant argues that a crucial difference is the lack of a disclaimer or other information within the Respondentís www site by which the Respondent clearly and conspicuously disassociates himself from the Complainant as trademark owner and makes clear that there is no dealership, sponsorship or affiliation. The Complainant submits that the Respondent is misleading the public by creating a www site with the look and feel of what the Complainant describes as an "original" www site. There is not the slightest hint that the Respondent or the operator of the www site is an independent dealer. The barely legible name and address near the headline "PORSCHE DESIGN" is irrelevant because the public will believe that this person is an official dealer.
The Complainant refers to paragraphs 4(c)(iii) and 4(c)(iii) of the Policy and submits that the Respondent is not commonly known by the domain-name nor is he making non-commercial use of the domain-name.
As to the question of bad faith, the Complainant submits that under no conceivable circumstances could the Respondent have acted in good faith. He has no legitimate interest in registering and using such a well known and prestigious trade name and trademark as an element of a domain-name. The Respondent could not have been unaware of the Complainantís trade name and trademark and its reputation when he registered the domain name. In this regard, the Complainant refers to the decisions of the administrative panels in Maruti Udyog Limited v Maruti Infotech (WIPO Case No. D2000-0520, July 26, 2000), relating to the domain name <maruti.org>; Maruti Udyog Limited .v. E-Enterprises, (WIPO Case No. D2000-1039, November, 2000) relating to the domain name <marutidealers.com>; and Inter-IKEA v Polanski (WIPO Case No. D2000-1614, January 22, 2001) relating to the domain name <ikeausa.com>.
The Complainant submits that it is obvious that the Respondent registered said domain name to promote his own or a third partyís sales business. His plan is to attract users who seek information from the Complainant.
The Complainant also submits that the fact that he chose a domain name with a slight difference to the <porsche-design.com> domain name, thus attracting users who inadvertently misspell the domain name while looking for the original www site amounts to typo piracy and is evidence of bad faith. In this regard the Complainant refers to paragraph 4(b)(iv) of the Policy and to the decision of the administrative panel in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic (WIPO Case No. D2000-1698, January 25, 2001) relating to the domain name <guiness.com>. The user will probably be disappointed by the Respondentís www site and blame the Complainant. Thus the reputation of the Complainant is tarnished.
As a result, this a case of general bad faith and of paragraph 4(b)(iv) of the Policy.
There was no Response filed by the Respondent.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of said domain name; and
(iii) said domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
This Administrative Panel accepts the Complainantís submission that said domain name is confusingly similar to the Complainantís trademarks and in particular Canadian Registered Trademark No. TMA341382 PORCHE DESIGN, registered on June 10, 1988. The absence of the space between the element <porsche> and<design> are not significant.
Rights or Legitimate Interest
The Respondent has not filed any Response in these Administrative Proceedings.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondentís rights or legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice to the domain name registrant of the dispute, the registrantís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the domain name registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has been using a domain name in connection with a www site on which on the face of it he is offering goods for sale. However the Complainant has established a prima facie case that has not been answered by the Respondent that the Respondent is not engaged in a bona fide offering of these goods for sale. The Complainant has documented a number of inaccuracies in the information provided on the www site in support of this.
The Respondent has never been an official dealer of the Respondentís cars and the indications are that the Respondent is not seriously offering these goods for sale. The Respondent was neither authorised nor licenced by the Complainant to utilise the Complainantís trade name or trademark and there is no business relationship between the Complainant and the Respondent.
It is clear that the Respondent has not been commonly known by the domain name. The www site purports to offer goods for sale and so it cannot be said that the Respondent is making a non-commercial or fair use of the domain name. The inaccuracies in the contact information indicate that the use is not legitimate in any event and it is likely that the association of the Complainantís trade mark with such a www site would both misleadingly divert consumers and tarnish the Complainantís trademark that is being used under licence.
In the circumstances, in the view of this Administrative Panel, the Complainant has satisfied the second limb of the test in paragraph 4 of the Policy.
Paragraph 4(b) of the Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrantís web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or location or of a product or service on the registrantís web site or location.
According to the Complaint the Respondent established a www site at the domain address in March 2001. It would appear that the Respondent has utilised images from the Complainantís advertising materials on the site, although the Complainant does not make any express claim to ownership of copyright in said images or allege infringement of copyright by the Respondent. The Respondent has also used the Complainantís trademark PORSCHE DESIGN on the site.
It would appear therefore that the Respondent has intentionally attempted to attract Internet users to his www site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís www site. This is evidenced by the fact that the Respondent has clearly at all times been aware of the Complainantís reputation and goodwill. The Complainant has a long established goodwill in the use of the PORSCHE trademark, the Respondent clearly associates the domain name with the Complainantís goods, and he uses images of the Complainantís vehicles and content from the Complainantís promotional material on his www site. The Respondent has made no effort whatsoever to disassociate himself or his business from the Complainant by posting an explanation on the site or otherwise.
On the face of it the Respondent is himself purporting to offer cars, equipment and auto parts for sale under a business name "Automobiles Gilles Arseneau", or he allowing a person called Gilles Arseneau to use the domain name for the purposes of such a www site, or else he is maintaining the www site for a third party operating under the business name "Automobiles Gilles Arseneau".
The Complainantís evidence is that the contact information on the site is incorrect. The Complainant has carried out investigations and it would appear that there is no undertaking with a business or phone registration, in Quebec, nor is there any listing for Gilles Arseneau in the <google.com> search engine or in any available listing of Laval (Quebec) businesses. Furthermore the telephone number given on the www site is that of a person who is apparently unrelated to the Respondent and the www site and the fax number given is that of a restaurant.
The Complainant alleges that the Respondent engaged in typo piracy by registering a domain name with a slight difference to the <porsche-design.com> domain name. This is an interesting point. It would appear from the Complaint that the <porsche-design.com> domain name is owned by a licensee of the Complainant and not the Complainant itself. It follows therefore that on the face of it, the Complainant is a stranger to any dispute between the owner of the <porsche-design.com> domain name and the domain name in issue in these proceedings. The Complainant argues, however, that visitors to the Respondentís www site will "probably be disappointed by the Respondentís www site and blame the Complainant. Thus the reputation of Complainant is tarnished." As the owner and licensor of the trademark PORSCHE DESIGN, the Complainant can reasonably argue that its trade mark may be tarnished by the Respondentís actions.
In the circumstances, in the absence of any Response, this Administrative Panel is satisfied on the balance of probabilities, that the Complainant has made out a prima facie case that the Respondent has registered and is using said domain name in an attempt to attract for financial gain, Internet users to his www site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís www site or location or of a product or service on the Respondentís www site.
The Complainant has therefore satisfied each of the three elements as required by paragraph 4 of the Policy and is entitled to succeed in its application.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules it is the decision of this Administrative Panel that the Complainant has established that said domain name is confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in said domain name and that the Respondent has registered and is using said domain name in bad faith.
This Administrative Panel therefore directs that said domain name be transferred to the Complainant.
Dated: February 24, 2002